How does the written description requirement apply to amended or new claims?
The written description requirement applies not only to original claims but also to amended and new claims introduced during prosecution. The MPEP 2163.01 states: “The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the…
Read MoreHow does the written description requirement apply to new or amended claims?
For new or amended claims, the applicant must show support in the original disclosure. The MPEP states: “With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.” The examiner has the initial burden of presenting evidence or reasoning why a person skilled in…
Read MoreWhat issues can arise with new or amended claims regarding written description?
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states: “To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35…
Read MoreHow are amended or new claims numbered in an inter partes reexamination certificate?
The numbering of amended or new claims in an inter partes reexamination certificate follows specific rules as outlined in MPEP 2688: Amended or new claims are numbered consecutively starting with the number next higher than the number of the last claim in the original patent. The numbering starts with the lowest amended claim number. If…
Read MoreHow is the date of patentability of amended or new claims determined in ex parte reexamination?
How is the date of patentability of amended or new claims determined in ex parte reexamination? In ex parte reexamination, the date of patentability for amended or new claims is determined based on the filing date of the request for reexamination. The MPEP provides clear guidance: “The date of patentability of an amended or new…
Read MoreWhat is the difference between new matter and new or amended claims in patent applications?
What is the difference between new matter and new or amended claims in patent applications? New matter and new or amended claims are distinct concepts in patent law: New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of…
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